national arbitration forum

 

DECISION

 

Ameriprise Financial, Inc. v. Robert Davison

Claim Number: FA0611000857548

 

PARTIES

Complainant is Ameriprise Financial, Inc. (“Complainant”), represented by Shawn Diedtrich, of Snell & Wilmer L.L.P., One Arizona Center, 400 E. Van Buren, Phoenix, AZ 85004-2202.  Respondent is Robert Davison (“Respondent”), PO Box 340736, Tampa, FL 33694-0736.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ameriprisefinancials.com>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 4, 2006.

 

On November 30, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <ameriprisefinancials.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ameriprisefinancials.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a leader in the financial services industry, with more than 110 years of service throughout the United States. 

 

In May of 2005, American Express publicly announced the spin off of American Express Financial Corporation into an independent company, Ameriprise Financial Inc., bearing Complainant’s AMERIPRISE FINANCIAL mark. 

 

Complainant has spent hundreds of millions of dollars on Internet, television, and print advertising for its AMERIPRISE FINANCIAL and AMERIPRISE service marks. 

 

Additionally, Complainant has filed an application with the United States Patent and Trademark Office for registration of the AMERIPRISE FINANCIAL mark (Serial No. 78,668,636, filed July 12, 2005).

 

Respondent is neither commonly known by the disputed domain name nor authorized to register domain names featuring Complainant’s mark. 

 

Respondent registered the contested <ameriprisefinancials.com> domain name on October 2, 2005. 

 

Respondent’s domain name resolves to a website that operates as a complaint site against Complainant’s business.

 

 

Respondent’s <ameriprisefinancials.com> domain name is confusingly similar to Complainant’s AMERIPRISE FINANCIAL mark.

 

Respondent does not have any rights or legitimate interests in the domain name <ameriprisefinancials.com>.

 

Respondent both registered and uses the <ameriprisefinancials.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

i.    the domain name registered by Respondent is identical or confusingly similar to a

      trademark or service mark in which Complainant has rights; and

ii.  Respondent has no rights or legitimate interests in respect of the domain name; and

iii. the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

Complainant is not required to hold a trademark registration in order to establish rights in the AMERIPRISE FINANCIAL service mark under Policy ¶ 4(a)(i).  See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Policy does not require that a complainant's trademark or service mark be registered by a governmental authority for protectable rights to exist).

On the record before us, there is no dispute that Complainant has established common law rights in the AMERIPRISE FINANCIAL service mark through continuous and extensive use of the mark in connection with its financial services business since its announcement as a company in May 2005.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, so that secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).

Respondent’s <ameriprisefinancials.com> domain name is confusingly similar to Complainant’s AMERIPRISE FINANCIAL mark.  Respondent’s domain name features Complainant’s mark in its entirety and merely adds the letter “s” as well as the generic top-level domain (“gTLD”) “.com.”  In Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000), a panel found that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie,’ did not prevent the likelihood of confusion caused by the use of the remaining identical mark . . . [and] . . . is similar in sound, appearance, and connotation.”  Similarly, in Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001), a panel held that the <nationalgeographics.com> domain name to be confusingly similar to a complainant’s NATIONAL GEOGRAPHIC mark.  In the instant case, therefore, neither the addition of the letter “s” nor the gTLD “.com” sufficiently distinguishes Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights or legitimate interests in the <ameriprisefinancials.com> domain name.  Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also the decision in Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest does exist).

 

Complainant contends that Respondent is not commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s mark.  In the absence of evidence suggesting otherwise, we are comfortable in concluding that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that, without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). For the same reason, we are likewise comfortable in concluding that Respondent had no authority to register a domain name using Complainant’s mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where, among other things, a respondent was not a licensee of a complainant).

 

Finally under this head, Complainant contends that Respondent is using the domain name <ameriprisefinancials.com>, which contains Complainant’s entire AMERIPRISE FINANCIAL mark, to operate a website describing Complainant’s business.  While Respondent has a right to express its dislike for or distrust of Complainant, Respondent does not have the right to use Complainant’s service mark for this purpose without authorization from the mark holder.  See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism was not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name was confusingly similar to a complainant's DAVID WEEKLEY HOMES mark); see also Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that, although the content of a website critical of a complainant might be entitled to First Amendment protection, the unauthorized use of that complainant’s mark in a domain name for such a site is not protected by the Policy).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the <ameriprisefinancials.com> domain name, which is confusingly similar to Complainant’s AMERIPRISE FINANCIAL mark, to operate a website critical of Complainant’s business.  Respondent does not deny this allegation.  On the facts before us, we are persuaded that Respondent’s use of its domain name is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See, for example, TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding a respondent's use of a complainant's mark to redirect Internet users to a website dedicated to criticizing that complainant was evidence that that respondent’s domain names were registered and used in bad faith); see also Diners Club Int’l, Ltd.  v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003):

 

Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.

 

Finally, we are entitled to and do infer from the circumstances here obtaining that Respondent had actual knowledge of Complainant’s rights in the mark AMERIPRISE FINANCIAL at the time it registered the disputed domain name.  Respondent’s registration of the domain name despite such actual knowledge amounts to bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual knowledge of a complainant’s rights in a mark at the time of registration of a competing domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a complainant’s mark and the content on a respondent’s website was obvious, that respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <ameriprisefinancials.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  January 18, 2007

 

 

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